Judgments nº T-574/19 of Tribunal General de la Unión Europea, November 18, 2020

• Resolution Date: November 18, 2020
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-574/19

(Community design - Invalidity proceedings - Registered community design representing fluid distribution equipment - Ground for invalidity - Non-compliance with requirements for protection - Article 25(1)(b) of Regulation (EC) No 6/2002 - Features of appearance of a product solely dictated by its technical function - Article 8(1) of Regulation No 6/2002) In Case T-574/19,

Tinnus Enterprises LLC, established in Plano, Texas (United States), represented by A. Odle and R. Palijama, lawyers and J. St Ville, Barrister,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and A. Folliard-Monguiral, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Koopman International BV, established in Amsterdam (Netherlands), represented by G. van den Bergh and B. Brouwer, lawyers,

the other party to the proceedings before the Board of Appeal of EUIPO having been

Mystic Products Import & Export, SL, established in Badalona (Spain),

ACTION brought against the decision of the Third Board of Appeal of EUIPO of 12 June 2019 (Case R 1002/2018-3), relating to invalidity proceedings between, on the one hand, Mystic Products Import & Export and Koopman International and, on the other, Tinnus Enterprises,

THE GENERAL COURT (Tenth Chamber),

composed of A. Kornezov, President, E. Buttigieg (Rapporteur) and K. Kowalik-Bańczyk, Judges,

Registrar: R. Ūkelytė, Administrator,

having regard to the application lodged at the Court Registry on 16 August 2019,

having regard to the response of EUIPO lodged at the Court Registry on 19 November 2019,

having regard to the response of the intervener lodged at the Court Registry on 11 November 2019,

having regard to the reassignment of the case to a new Judge-Rapporteur sitting in the Tenth Chamber,

having regard to the written questions put by the Court to the parties and their answers to those questions lodged at the Court Registry on 4, 9 and 10 June 2020,

further to the hearing on 10 July 2020,

gives the following

Judgment

Background to the dispute

1 The applicant, Tinnus Enterprises LLC, is the holder of the Community design filed on 10 March 2015 with the European Union Intellectual Property Office (EUIPO) and registered under number 1 431 829-0001 (‘the contested design’), pursuant to Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1).

2 The contested design is represented as follows:

1.1

1.2

1.3

3 In accordance with Article 36(2) of Regulation No 6/2002, the applicant indicated in the application for registration that the contested design was intended to be applied to the product ‘fluid distribution equipment’ in Class 23.01 of the Locarno Agreement Establishing an International Classification for Industrial Designs of 8 October 1968.

4 On 7 June 2016, Mystic Products Import & Export, SL, filed an application for a declaration of invalidity in respect of the contested design based on Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Articles 4(1) and 8(1) of that regulation. Mystic Products Import & Export contended, inter alia, that all the features of the contested design were solely dictated by their technical function. Consequently, in the light of Article 8(1) of Regulation No 6/2002, that design was not eligible for any protection.

5 On 19 April 2017, the intervener, Koopman International BV, also filed an application for a declaration of invalidity in respect of the contested design, based on the same provisions and the same arguments, in essence, as those mentioned in paragraph 4 above. The intervener requested that the design be declared invalid or at least that its protection be limited.

6 On 30 August 2017, EUIPO informed the two applicants for a declaration of invalidity that their applications would be examined in one set of proceedings under Article 54 of Regulation No 6/2002.

7 By decision of 30 April 2018, the Invalidity Division declared that the contested design was invalid.

8 On 31 May 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 55 to 60 of Regulation No 6/2002, seeking the annulment of the Invalidity Division’s decision.

9 By decision of 12 June 2019 (‘the contested decision’), the Third Board of Appeal of EUIPO upheld the Invalidity Division’s finding that the contested design was based on features of a product, fluid distribution equipment, solely dictated by the technical function of that product, with the result that that design had to be declared invalid by virtue of the application of Article 25(1)(b) in conjunction with Article 8(1) of Regulation No 6/2002. Accordingly, the applicant’s appeal was dismissed.

Forms of order sought

10 The applicant claims that the Court should:

- annul the contested decision;

- vary the contested decision to: (i) allow the applicant’s appeal; (ii) dismiss the applications for a declaration of invalidity in respect of the contested design; (iii) order the applicants for a declaration of invalidity to pay the costs incurred by the applicant in the proceedings before the Board of Appeal and the Invalidity Division; and (iv) in the alternative, remit the case to the Invalidity Division for consideration under Article 4(1) of Regulation No 6/2002;

- make an order for costs in the applicant’s favour.

11 EUIPO and the intervener contend that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

12 The applicant has advanced four pleas in law in support of its action, which relate to the Board of Appeal’s application of Article 8(1) of Regulation No 6/2002 in the contested decision.

13 Article 8(1) of Regulation No 6/2002 provides that a Community design is not to subsist in features of appearance of a product which are solely dictated by its technical function.

14 Concerning Article 8(1) of Regulation No 6/2002, recital 10 of that regulation states as follows:

‘Technological innovation should not be hampered by granting design protection to features dictated solely by a technical function. It is understood that this does not entail that a design must have an aesthetic quality. Likewise, the interoperability of products of different makes should not be hindered by extending protection to the design of mechanical fittings. Consequently, those features of a design which are excluded from protection for those reasons should not be taken into consideration for the purpose of assessing whether other features of the design fulfil the requirements for protection’.

15 In its judgment of 8 March 2018, DOCERAM (C-395/16, EU:C:2018:172, paragraph 31), the Court of Justice found, inter alia, that Article 8(1) of Regulation No 6/2002 excluded protection under the law on Community designs for features of appearance of a product where considerations other than the need for that product to fulfil its technical function, in particular those related to the visual aspect, have not played any role in the choice of those features, even if other designs fulfilling the same function exist.

16 The Court of Justice stated that, in order to assess whether features of appearance of a product are solely dictated by its technical function, it had to be established that the technical function was the only factor which determined those features, the existence of alternative designs not being decisive in that regard (judgment of 8 March 2018, DOCERAM, C-395/16, EU:C:2018:172, paragraph 32).

17 According to the Court of Justice, assessment as to whether the features of appearance of a product are covered by Article 8(1) of Regulation No 6/2002 must be made in the light of all the objective circumstances relevant to each individual case. That assessment must be made, in particular, having regard to the design at issue, the objective circumstances indicative of the reasons which dictated the choice of features of appearance of the product concerned, or information on its use or the existence of alternative designs which fulfil the same technical function, provided that those circumstances, data, or information as to the existence of alternative designs are supported by reliable evidence (judgment of 8 March 2018, DOCERAM, C-395/16, EU:C:2018:172, paragraphs 36 and 37).

18 It is in the light of those factors that the General Court must assess the pleas in law on which the applicant relies.

The first plea i n law, alleging that the Board of Appeal failed to adopt a structured and systematic appr oach in the contested decision.

19 The applicant submits that, having regard to the judgment of 8 March 2018, DOCERAM (C-395/16, EU:C:2018:172), the Board of Appeal, in order to determine whether the contested design had been validly registered, had to adopt a systematic and structured approach; that approach consists in, first, determining the technical function of the product for which registration of the contested design had been granted, secondly, identifying the features of appearance of the product which, allegedly, were solely dictated by its technical function, thirdly, determining whether each of those features is in fact dictated by the technical function of that product and, fourthly, assessing the contested design in the light of the criteria of novelty and individual character required by Articles 4 to 6 of Regulation No 6/2002, excluding the features of appearance solely dictated by the technical function of the product.

20 According to the applicant, the Board of Appeal’s analysis in the contested decision had no such structure. The applicant submits that the Board of Appeal did not begin its analysis by determining the technical function of the product concerned. Furthermore, the Board of Appeal identified the four component parts of the product concerned, namely the housing, the hollow tubes, the balloons, and the fasteners fixing the balloons to the tubes, instead of...